DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Note
The claims filed on 03/25/2026 fail to show / include claims 14 – 17 which were included in the previous claim set, it is noted that for each amendment document that includes a change to existing claims, cancellations of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented. See MPEP 1.121(c). If Applicant’s intentions were to cancel claims 14 -17, Applicant should list claims 14 – 17 with the “cancelled” identifier next to the number of the claim. Consecutive claims having the same status of "canceled" or "not entered" may be aggregated into one statement (e.g., Claims 1–5 (canceled)). Based on the above, the amendments to the claims are seen as being not compliant as failing to comply with 37 CFR 1.121. However, in an effort to expedite prosecution, the Examiner has decided not to send out a Notice of Non-Complaint Amendment, and to examine the claims as best understood by the Examiner, wherein claims 14 – 17 are “cancelled”.
Response to Amendment
This Office action is in response to the applicant’s communication filed 03/25/2026.
Status of the claims:
Claims 1 – 13 are pending in the application.
Claims 1 – 8 and 13 are amended.
Drawings
The drawings were received on 03/25/2026. These drawings are not accepted.
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because replacement Fig. 9A shows the supposedly replaced reference number “62” in multiple places and shows a reference number “60” having been replaced with reference number “63”; additionally, replacement Fig. 10A fails to show the replacement of reference number “62” with the indicated reference number “63”. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Objections
The objections to claims 6, 7, and 13 in the previous action dated 03/09/2026 have been withdrawn in light of the Applicant’s amendments filed 03/25/2026. Specifically, the objection to claim 6 and 7 regarding the phrase “said removal needle tip” and the objection to claim 13 regarding the phrase “said force-conditioning device”, have been withdrawn as the appropriate corrections have been made. However, new objections have been set forth below in light of Applicant’s amendments.
Claims 1, 3, 13 are objected to because of the following informalities:
Claim 1 recites “a helicl wire rope structure electrode” in line 1, however this appears to be a typographical error as it appears the letter “a” in the word “helical” has been stricken out, therefore the Examiner suggests the line be amended to read “a helical wire rope structure electrode”;
Claim 1 recites “it” in line 8, although the line is understood by the Examiner to mean “the helical wire rope structure electrode”, the Examiner suggests the line be amended to read “the helical wire rope structure electrode” for the purpose of maintaining consistent language throughout the claims;
Claims 1 and 3 recite one of “said a helical wire rope structure electrode” and “a helical wire rope structure electrode” in lines 11 and 2, respectively, although the line is understood by the Examiner to mean “the helical wire rope structure electrode” as the “helical wire rope structure electrode” was previously defined, the Examiner suggests the line be amended to read “the helical wire rope structure electrode” for the purpose of maintaining consistent language throughout the claims;
Claim 1 recites “which is mechanically engage to” in line 13, however this is not grammatically correct, therefore the Examiner suggests the line be amended to read “which is mechanically engaged to”;
Claim 13 recites “a rotational driver” in line 2, although the line is understood by the Examiner to mean “the rotational driver” as the “rotational driver” was previously defined in claim 1, the Examiner suggests the line be amended to read “the rotational driver” for the purpose of maintaining consistent language throughout the claims;
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The rejection of claim 5 under U.S.C 35 112(b) for failing to comply with the written description requirement, recited in the previous action dated 03/09/2026 have been withdrawn in light of the Applicant’s amendments filed 03/23/2026. Specifically, the rejection of claim 5, regarding the phrase "wherein said attachment tool is exposed to the implant through said side port" for being unclear if Applicant is positively reciting the previously functionally recited implant, has been withdrawn as the phrase was made clear.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 3, the phrase "the system includes at least one tool selected from the group consisting of a hooking slot, a hook and corkscrew " renders the claim indefinite because it is unclear if Applicant is adding additional structure to the system such that the system includes a needle, an attachment tool, and the at least one tool or if Applicant is further defining the structures (i.e., the needle and/or the attachment tool) of the system claim 1 such that the system comprises a needle and an attachment tool which includes the at least one tool. Based on Applicant’s specification wherein the attachment tool is the at least one tool, the Examiner will examine the claims to mean the latter.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 3 and 6 – 13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mohajer (US 2010/0191260 A1) (previously recited).
Regarding claim 1, Mohajer discloses a system (device of Fig. 8) (abstract, paragraphs [0009], [0036], and Fig. 8) capable of removing a helical wire rope structure electrode from bodily tissue (Examiner’s note: it should be understood that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67,190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d150,152,88; with that being said, because the system of Mohajer is used for grasping a suture as discussed in paragraphs [0009] and [0036], the Examiner contends the system is capable of functioning to grasp a helical wire rope structure electrode), the system comprising:
a removal needle (tube 82) comprising a shaft (shaft of rod 82), a tip (tip 84) and an attachment tool (rod 80 with hook / notch 90) associated with said tip of the removal needle (paragraphs [0035 – 0036] and Fig. 8);
the tip of the removal needle configured to remove said helical wire rope structure electrode and configured to mechanically engage the helical wire rope structure electrode to allow it to be unzipped from the surrounding tissue by applying a torque using a rotational driver to remove said helical wire rope structure electrode and then using said removal needle to withdraw said helical wire rope structure electrode intact by withdrawing said removal needle which is mechanically engaged to said unzipped helical wire rope structure electrode (Examiner’s note: it should be understood that the preceding limitations are intended use limitations, which require only that the structure of the prior art be capable of functioning as claimed; with that said, the tip of needle (tip 84 of tube 82) is capable of being used to remove the helical wire rope structure electrode and to mechanically engage the helical wire rope structure electrode to allow it to be unzipped by an applied torque via a rotational driver (housing 94 – which can be rotated to transfer a torque to the tip), and then allowing the needle to remove said helical wire rope structure electrode intact by withdrawing the needle which is mechanically engaged with the helical wire rope structure electrode as the needle is used to remove a suture – paragraph [0036]. Therefore, Mohajer discloses the system as claimed).
Regarding claim 2, Mohajer discloses wherein the removal needle (tube 82) further comprises an interior channel (paragraph [0035] and Fig. 8) and said attachment tool (rod 80 with hook / notch 90) is configured to pull the helical wire rope structure electrode through said interior channel when the helical wire rope structure electrode is unzipped from the tissue (Examiner’s note: it should be understood that the preceding limitation is an intended use limitation which requires only that the structure of the prior art be capable of functioning as claimed; with that said, when the spring is compressed, the tube 82 (i.e., the needle) moves over the entire rod 80 and the hook/notch 90 (i.e., the attachment tool), therefore, the rod 80 and the hook/notch 90 (i.e., the attachment tool) capable of pulling the helical wire rope structure electrode through the interior channel as claimed).
Regarding claim 3, Mohajer discloses wherein said system for removing the helical wire rope structure electrode includes at least one tool selected from the group consisting of a hooking slot (notch 90) (paragraph [0036]).
Regarding claim 6, Mohajer discloses wherein said removal needle tip (tube 82) is sharp and configured to penetrate the bodily tissue (paragraph [0035] and Fig. 8).
Regarding claim 1, (alternate interpretation – changes italicized) Mohajer discloses a system (device of Fig. 8) (abstract, paragraphs [0009], [0036], and Fig. 8) capable of removing a helical wire rope structure electrode from bodily tissue (Examiner’s note: it should be understood that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67,190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d150,152,88; with that being said, because the system of Mohajer is used for grasping a suture as discussed in paragraphs [0009] and [0036], the Examiner contends the system is capable of functioning to grasp a helical wire rope structure electrode) the system comprising:
a removal needle (rod 80) comprising a shaft (shaft of rod 80), a tip (distal end of rod 80 – portion exposed through tube 82 shown in Fig. 8 – which comprises the hook/notch 90) and an attachment tool (hook / notch 90) associated with said tip (paragraphs [0035 – 0036] and Fig. 8);
the tip (distal end of rod 80 – portion exposed through tube 82 shown in Fig. 8) of the removal needle configured to remove said helical wire rope structure electrode and configured to mechanically engage the helical wire rope structure electrode to allow it to be unzipped from the surrounding tissue by applying a torque using a rotational driver to remove said helical wire rope structure electrode and then using said removal needle to withdraw said helical wire rope structure electrode intact by withdrawing said removal needle which is mechanically engaged to said unzipped helical wire rope structure electrode (Examiner’s note: it should be understood that the preceding limitations are intended use limitations, which require only that the structure of the prior art be capable of functioning as claimed; with that said, the tip of needle (distal end of rod 80 – portion exposed through tube 82 shown in Fig. 8 - which comprises the hook / notch 90) is capable of being used to remove the helical wire rope structure electrode and to mechanically engage the helical wire rope structure electrode to allow it to be unzipped by an applied torque via a rotational driver (housing 94 – which can be rotated to transfer a torque to the tip), and then allowing the needle to remove said helical wire rope structure electrode intact by withdrawing the needle which is mechanically engaged with the helical wire rope structure electrode as the needle is used to remove a suture via the notch– paragraph [0036]. Therefore, Mohajer discloses the system as claimed).
Regarding claim 7, (alternate interpretation) Mohajer discloses wherein said removal needle tip is blunt (paragraph [0038] and Fig. 8).
Regarding claim 8, (alternate interpretation) Mohajer discloses further comprising:
an introducer tool (tip 84) comprising a penetrating tip (tip 84) and an introducer channel (channel of the tip) sized to allow insertion of said removal needle (rod 80) said introducer channel (channel through the tip) (paragraphs [0035 – 0036] and Fig. 8) and said removal needle (rod 80) mechanically engageable with said to the helical wire rope structure electrode (Examiner’s note: it should be understood that the preceding limitations are intended use limitations, which require only that the structure of the prior art be capable of functioning as claimed; with that said, the tip of needle (distal end of rod 80 – portion exposed through tube 82 shown in Fig. 8 - which comprises the hook / notch 90) is capable of engaging with the helical wire rope structure electrode, thus the needle is engageable with the helical wire rope structure electrode).
Regarding claim 9, (alternate interpretation) Mohajer discloses further comprising:
a handle (housing 94) attached to said removal needle (rod 80) (paragraph [0038] and Fig. 8); and
an introducer tool engagement rod (shaft of tube 82) that connects said introducer tool (tip 84) to said handle (Fig. 8).
Regarding claims 10 – 12, (alternate interpretation) Mohajer discloses further comprising a connection port (valve 38) that allows connection / is configured to connect to an external system, [claim 11] a suction device, or [claim 12] an aspiration device (Examiner’s note: it should be understood that the preceding limitations are functional which requires only that the structure of the prior art be capable of functioning in the manner claimed. With that said, the tube and valve 38 allows an external system, either a suction device and/or an aspiration device, to be connected thereto; therefore, the limitations are encompassed by Mohajer).
Regarding claim 13, (alternate interpretation) Mohajer discloses further comprising: a rotational driver (handle 94 – which is capable of being rotated and pushed axially) at least one force-conditioning device selected from the group of a force limiting fuse and a force smoothing device (coil spring 86), said force-conditioning device being associated with said removal needle (rod 80), wherein said association is selected from the group of connected to said removal needle (paragraph [0035] and Fig. 8) and incorporated into said removal needle.
Claims 1 – 9 and 13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Norton (US 2015/0094739 A1) (previously recited).
Regarding claim 1, Norton discloses a system (medical device 10) (abstract, paragraphs [0022 – 0028], and Figs. 1-10) capable of removing a helical wire rope structure electrode from bodily tissue (Examiner’s note: it should be understood that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67,190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d150,152,88. With that said, because the device 10 can grasp a suture and thus capable of removing said suture from the body, and the Examiner contents the device 10 is capable of removing a helical wire rope structure electrode. Therefore, the device of Norton discloses the system as claimed) the system comprising:
a removal needle (inner tube 16) comprising a shaft (shaft of inner tube 16), a tip (tip 42 with opening 46) and an attachment tool (flexible arm 18) associated with said tip (paragraphs [0025], [0027 – 0029] and Figs. 1 – 4B) (Examiner’s note: the inner tube 16 matches the structure of Applicant’s “needle” in Fig. 6A wherein reference number “33” is designated as the “needle”; therefore, the Examiner is considering the “inner tube 16” as the needle as it matches Applicant’s disclosed structure);
said tip (tip 42 with notch 46) of the removal needle configured to remove said helical wire rope structure electrode and configured to mechanically engage the helical wire rope structure electrode to allow it to be unzipped from the surrounding tissue by applying a torque using a rotational driver (handle assembly 12 – which is capable of being rotated) to remove said helical wire rope structure electrode and then using said removal needle to withdraw said helical wire rope structure electrode intact by withdrawing said removal needle which is mechanically engaged to said unzipped helical wire rope structure electrode (Examiner’s note: it should be understood that the preceding limitations are intended use limitations, which require only that the structure of the prior art be capable of functioning as claimed; with that said, the tip of needle (tip 42 with notch 46) is capable of being used to remove the helical wire rope structure electrode and to mechanically engage the helical wire rope structure electrode to allow it to be unzipped by an applied torque via a rotational driver (handle 12 – which can be rotated to transfer a torque to the tip), and then allowing the needle to remove said helical wire rope structure electrode intact by withdrawing the needle which is mechanically engaged with the helical wire rope structure electrode. Therefore, Norton discloses the system as claimed).
Regarding claim 2, Norton discloses wherein the removal needle (inner tube 16) further comprises an interior channel (channel 44) and said attachment tool (flexible arm 18) is configured to pull the helical wire rope structure electrode through said interior channel when said helical wire rope structure electrode is unzipped from the surrounding tissue (Examiner’s note: it should be understood that the preceding limitation is an intended use limitation which requires only that the structure of the prior art be capable of functioning in the manner claimed; with that said, the flexible arm 18 (i.e., the attachment tool) is slidable within the inner tube 16, as discussed in paragraphs [0030 – 0031], and thus is capable of pulling a helical wire rope structure electrode therethrough when the helical wire rope structure electrode is unzipped. Therefore, Norton discloses the limitation above).
Regarding claim 3, Norton discloses wherein said system for removing a helical wire rope structure electrode includes at least one tool selected from the group consisting of a hooking slot (notch 52).
Regarding claim 4, Norton discloses wherein said removal needle (inner tube 16) further comprises a side port (radial opening 46) connected to said interior channel near said tip (tip 42) (paragraph [0027] and Figs. 1A-4B).
Regarding claim 5, Norton discloses wherein said removal needle (inner tube 16) is configured to be exposed to the helical wire rope structure electrode through said side port (radial opening 46) (Examiner’s note: the radial opening 46 of the inner tube 16 (i.e., the needle) can expose the needle as a whole to the helical wire rope structure electrode in the same way the tip 42 can expose the needle to the helical wire rope structure electrode by coming into contact with said helical wire rope structure electrode).
Regarding claim 6, Norton discloses wherein said removal needle tip (tip 42) is sharp and configured to penetrate the bodily tissue (paragraph [0027]).
Regarding claim 7, Norton discloses wherein said removal needle tip (tip 42) is blunt (paragraph [0027]).
Regarding claim 8, Norton discloses further comprising:
an introducer tool (sharp tip 34) comprising a penetrating tip (tip 34) and an introducer channel (channel through the tip 34) sized to allow insertion of said removal needle through the introducer channel (paragraphs [0026 – 0027]) and said removal needle (inner tube 16) mechanical engageable with said helical wire rope structure electrode (Examiner’s note: it should be understood that the preceding limitations are intended use limitations, which require only that the structure of the prior art be capable of functioning as claimed; with that said, the needle (inner tube 16) is capable of mechanically engaging with a said helical wire rope structure electrode).
Regarding claim 9, Norton discloses further comprising:
a handle (handle 20) attached to said removal needle (inner tube 16) (paragraphs [0025 – 0027] and Fig. 1A,2A,3A,4A); and
an introducer tool engagement rod (outer tube 14) that connects said introducer tool (sharp tip 34) to said handle (handle 20) (paragraphs [0025 – 0027] and Fig. 1A).
Regarding claim 13, Norton discloses further comprising: the rotational driver (handle 20 – which is capable of being rotated) with at least one force-conditioning device selected from the group of a force limiting fuse and a force smoothing device (coil spring 60), said force-conditioning device being associated with said removal needle (inner tube 16), wherein said association is selected from the group of connected to said removal needle (paragraphs [0032 – 0033] and Fig. 5) and incorporated into said removal needle.
Claims 1 – 7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Levine et al (US 2016/0038141 A1).
Regarding claim 1, Levine discloses a system (engagement tool 1) (abstract, paragraphs [0121 – 0123], [0127] and Figs. 1, 26 – 32) capable of removing a helical wire rope structure electrode from bodily tissue (Examiner’s note: it should be understood that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67,190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d150,152,88. With that said, because the system is capable of grasping an objected within the body as stated in paragraph [0127], the Examiner contents the system is capable of removing a helical wire rope structure electrode. Therefore, the device of Levine discloses the system as claimed) the system comprising:
a removal needle (penetrating member 3b) comprising a shaft (shaft of penetrating member 3b with engagement features 12b), a tip (tip of penetrating member 3b – Fig. 26) and an attachment tool (capture mechanism 4b) associated with said tip (paragraphs [0122], [0144 – 0149] and Figs. 26 – 34);
said tip (tip of penetrating member 3b with engagement features 12b) of the removal needle configured to remove said helical wire rope structure electrode and configured to mechanically engage the helical wire rope structure electrode to allow it to be unzipped from the surrounding tissue by applying a torque using a rotational driver to remove said helical wire rope structure electrode and then using said removal needle to withdraw said helical wire rope structure electrode intact by withdrawing said removal needle which is mechanically engaged to said unzipped helical wire rope structure electrode (Examiner’s note: it should be understood that the preceding limitations are intended use limitations, which require only that the structure of the prior art be capable of functioning as claimed; with that said, the tip of needle (tip 42 with engagement features 12b) is capable of being used to remove the helical wire rope structure electrode and to mechanically engage the helical wire rope structure electrode to allow it to be unzipped by an applied torque via a rotational driver (rotational driver that is inherently used to rotate the capture mechanism 4b as discussed in paragraph [0146]), and then allowing the needle to remove said helical wire rope structure electrode intact by withdrawing the needle which is mechanically engaged with the helical wire rope structure electrode. Therefore, Levine discloses the system as claimed).
Regarding claim 2, Levine discloses wherein the removal needle (penetrating member 3b) further comprises an interior channel (interior channel of penetrating member 3b through which the capture mechanism 4b extends – Fig. 32) and said attachment tool (capture mechanism 4b) is configured to pull the helical wire rope structure electrode through said interior channel when said helical wire rope structure electrode is unzipped from the surrounding tissue (Examiner’s note: it should be understood that the preceding limitation is an intended use limitation which requires only that the structure of the prior art be capable of functioning in the manner claimed; with that said, the flexible arm 18 (i.e., the attachment tool) is slidable within the penetrating member 3b, as discussed in paragraphs [0122], and thus is capable of pulling a helical wire rope structure electrode therethrough when the helical wire rope structure electrode is unzipped. Therefore, Levine discloses the limitation above).
Regarding claim 3, Levine discloses wherein said system for removing a helical wire rope structure electrode includes at least one tool selected from the group consisting of a hooking slot (engagement feature 12b) (Fig. 26).
Regarding claim 4, Levine discloses wherein said removal needle (penetrating member 3b) further comprises a side port (engagement feature 12b) connected to said interior channel near said tip (tip of penetrating member 3b) (paragraph [0144] and Figs. 25 -26).
Regarding claim 5, Levine discloses wherein said removal needle (penetrating member 3b) is configured to be exposed to the helical wire rope structure electrode through said side port (engagement feature 12b) (Examiner’s note: the engagement feature 12b of the penetrating member 3b (i.e., the needle) can expose the needle as a whole to the helical wire rope structure electrode in the same way the tip can expose the needle to the helical wire rope structure electrode by coming into contact with said helical wire rope structure electrode).
Regarding claim 6, Levine discloses wherein said removal needle tip (tip of penetrating member 3b) is sharp and configured to penetrate the bodily tissue (paragraph [0121]).
Regarding claim 7, Levine discloses wherein said removal needle tip (tip of penetrating member 3b) is blunt (paragraph [0121]).
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive. More Specifically:
In response to applicant's argument that “The invention of Howe [Applicant] as disclosed in paragraphs [0046], [0047] and [0053] discloses that the removal needle is designed to unzip an electrode formed from a helical wire rope structure electrode contained in a tissue by applying a torque to the helical wire rope structure electrode and therefore works within the tissue of a body whereas the invention of Mohajer is designed to remove a suture from a body cavity”, and “the invention of Howe as disclosed in paragraph [0047] is designed to unzip an electrode formed from a helical wire rope structure electrode contained in a tissue by applying a torque using a rotational driver to unzip a helical wire rope structure electrode and the invention of Howe works within the tissue of a body whereas the invention of Norton is designed to remove a suture from a body cavity or soft tissue”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. With that said, because both Mohajer and Norton comprise structure that is capable of grasping and rotating an implant, then it can be said that both Mohajer and Norton are capable performing in the manner claimed. Moreover, while the Examiner acknowledges that Mohajer and Norton do not disclose using applying torque to the needle(s), the handles of Mohajer and Norton are capable of being rotated via the user thereby applying torque to the needles. Therefore, Mohajer and Norton meet the limitations of the claims. The Examiner suggests adding further structural limitations to further define the scope of Applicant’s invention so as to over come the structural similarities between the Instant Application and the prior art.
With respect to the Applicant’s argument that “Respectfully the applicant has reviewed the disclosure of Norton and it is obvious that Norton does not disclose a hook”, as stated in the rejection above, Norton discloses a “hooking slot” which is one of the claimed options in the claimed group and is defined as a slot capable of hooking an object, and the designated notch of Norton is capable of hooking an object. Therefore, Norton does disclose the limitations as claimed based under BRI.
With respect to Applicant’s arguments that neither the devices of Mohajer and Norton are capable of functioning as claimed, the Applicant has not provided any evidence to prove the devices would not operate as intended. Merely, saying that the devices would not be capable of operating as claimed is not sufficient to show inoperability of the device. Furthermore, the examiner notes that the arguments of the attorney can not take place of evidence. See In Re Schulze, 346, F.2d 600,602, 145 USPQ 716, 718 (CCPA 1965).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew Restaino whose telephone number is (571)272-4748. The examiner can normally be reached Mon - Fri 8:00 - 4:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 571-272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew Restaino/Primary Examiner, Art Unit 3771
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